Photo of Rochelle DreyfussIn recent years, there has been a dramatic expansion in patent protection. At one time, patenting was reserved to the technological arts, but in a 1998 decision, State Street Bank & Trust Co. v. Signature Financial Group, Inc., the Court of Appeals for the Federal Circuit approved the patenting of any advance that achieved a useful, concrete, and tangible result. In the wake of State Street, a vast array of business methods—from methods for diagnosing disease and minimizing taxes, to methods for teaching janitors to dust and swinging sideways on playground equipment—became patentable subject matter. After expressing dissatisfaction with this expansive coverage, the Supreme Court granted certiorari on a business method case, Bilski v. Kappos. The decision, which was handed down the last day of the Term, rejected State Street along with a subsequent revision of its test. However, the Court did not provide a great deal of guidance other than to say that “laws of nature, physical phenomena, and abstract ideas” are not patentable subject matter.

In an opinion that included several citations to an article by Rochelle Dreyfuss, Pauline Newman Professor of Law and co-director of the Engelberg Center on Innovation Law and Policy, Justice John Paul Stevens made it clear that he would have gone much further and barred patents on all business methods. Dreyfuss’s article, written shortly after State Street was decided, argued that courts must be vigilant to protect competition, be it in business or innovation. Thus, she argued that “upstream” inventions—the core ingredients of commerce and science—should not be patentable.  

Dreyfuss has been particularly concerned about patenting in the medical context. She is a member of the Health and Human Services Secretary’s Advisory Committee on Genetics, Health, and Society (SACGHS) and also a member of its task force on patenting. Shortly before Bilski was decided, SACGHS issued a Report on Gene Patents and Licensing Practices and Their Impact on Patient Access to Genetic Tests. Among other recommendations, the report suggested that simple associations between genetic mutations and propensity to disease not be considered patentable subject matter—a question that, unfortunately, the Bilski decision did not explicitly resolve.

Posted July 16, 2010